Conceptus, Inc. v. Hologic, Inc.

Filing 453

SUPPLEMENTAL CLAIM CONSTRUCTION ORDER RE DISPUTED CLAIM TERM "WITH". Signed by Judge Alsup on October 6, 2011. (whalc1, COURT STAFF) (Filed on 10/6/2011)

Download PDF
1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 CONCEPTUS, INC., 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 No. C 09-02280 WHA Plaintiff, v. SUPPLEMENTAL CLAIM CONSTRUCTION ORDER RE DISPUTED CLAIM TERM “WITH” HOLOGIC, INC., Defendant. / INTRODUCTION In this patent-infringement action involving intrafallopian contraceptive methods, the 18 parties now dispute the construction of a term that was not addressed in the March 2010 claim 19 construction order. With the benefit of argument and extensive briefing, this order now construes 20 the disputed term preparatory to settling the final charge to the jury. 21 STATEMENT 22 The facts and procedural history of this action have been set forth in previous orders 23 (see Dkt. Nos. 189, 356). Plaintiff Conceptus, Inc. is suing Hologic, Inc. on method claims 37 24 and 38 of United States patent number 6,634,361. Cross motions in limine raised a claim 25 construction dispute regarding the term “with” in unasserted claim 36, from which the asserted 26 claims depend. The issue was briefed and argued at the final pretrial conference, after which the 27 parties were requested to submit supplemental briefing and the entire prosecution file history for 28 1 the ’361 patent. Having considered the parties’ voluminous briefing and oral argument on this 2 issue, as well as the full patent prosecution history, this order now resolves this claim 3 construction dispute. 4 5 ANALYSIS The ’361 patent, entitled “Contraceptive Transcervical Fallopian Tube Occlusion Devices 6 And Methods,” was issued on October 21, 2003. The disputed term, “with,” appeared in 7 independent method claim 36, which although not asserted, was incorporated into dependent 8 claims 37 and 38. The disputed term is italicized below (col. 23:38–53): 9 36. transcervically introducing a pre-formed resilient structure into a target region of a fallopian tube; 11 For the Northern District of California United States District Court 10 An intrafallopian contraceptive method comprising: imposing an anchoring force against a tubal wall of the fallopian tube by resiliently engaging an inner surface of the tubal wall with the resilient structure; and 12 13 permanently affixing the resilient structure within the fallopian tube with a lumen-traversing region of the resilient structure so that at least a portion of the fallopian tube is open. 14 15 16 17 18 37. A method as claimed in claim 36, wherein the affixing step comprises promoting tissue ingrowth of the tubal wall surrounding the resilient structure. 38. A method as claimed in claim 37, wherein the tissue ingrowth occludes the fallopian tube to inhibit conception. 19 20 The disagreement is over the term “with” in the permanently affixing step and whether it 21 specified how versus where permanent affixation occurs. Defendant Hologic argues that the term 22 “with” specified the lumen-traversing region as the how, i.e. the means by which the structure was 23 permanently affixed within the fallopian tube. Hologic goes on to say that the means of affixation 24 must be mechanical in nature. The patent owner, Conceptus, on the other hand, argues that the 25 term “with” merely identified the lumen-traversing region as the location where the structure was 26 permanently affixed. 27 28 If we only focus on claim 36, it seems true that the permanently affixing step seems bereft of any explicit means for doing the permanently affixing. Unlike the preceding limitation, for 2 1 example, there is no “by” clause in the permanently affixing step. This is what tees up the 2 possible need to construe the “with” clause to supply the how (as well as the where). 3 In the Court’s judgment, however, there is a simple and elegant solution. Claim 36 is not 4 asserted. Claim 37 is asserted. Claim 37 supplies the how, by stating that the affixing step 5 “comprises promoting tissue ingrowth of the tubal wall surrounding the resilient structure.” In 6 other words, for claim 37 purposes, the permanently affixing step should be understood 7 as follows: 8 10 permanently affixing the resilient structure within the fallopian tube with a lumen-traversing region of the resilient structure by (at least) promoting tissue ingrowth of the tubal wall surrounding the resilient structure so that at least a portion of the fallopian tube is open. 11 So understood, the clause “with a lumen-traversing region” describes where the affixation occurs 12 and the clause “by promoting tissue ingrowth . . .” describes how it is done. For the Northern District of California United States District Court 9 13 14 15 There is no need or occasion, in short, to stretch the “with” clause to also supply the how, much less to read a mechanical imperative into the clause. Hologic’s construction is rejected. Hologic insists that its method uses radiofrequency energy to irritate the tubal tissue and 16 thus to promote tissue ingrowth (to permanently affix the matrix) and complains that this 17 particular use of radiofrequency energy was not enabled by the specification. Perhaps this is true, 18 but at most this will be an invalidity issue for the jury. This does not affect the proper claim 19 construction of claims 36 and 37 as read together. Nor does it negate the fact that tissue ingrowth 20 is promoted in the accused method or so a jury could reasonably find. 21 22 CONCLUSION The foregoing claim construction will control hereinafter. 23 24 IT IS SO ORDERED. 25 26 Dated: October 6, 2011. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 27 28 3

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?